Josh Malone v. United States Patent & Trademark Office

── Josh Malone v. United States Patent & Trademark Office ── Court: Court of Appeals for the Fourth Circuit Date: May 05, 2026 Category: General USCA4 Appeal: 24-1706 Doc: 35 Filed: 05/05/2026 Pg: 1 of 15 PUBLISHED UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT No. 24-1706 JOSH MALONE, Plaintiff - Appellant, v. UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant - Appellee. Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. Claude M. Hilton, Senior District Judge. (1:23-cv-01050-CMH-IDD) Argued: March 18, 2026 Decided: May 5, 2026 Before WILKINSON, NIEMEYER, and KING, Circuit Judges. Affirmed by published opinion. Judge Niemeyer wrote the opinion, in which Judge Wilkinson and Judge King joined. ARGUED: Brett Aaron Mangrum, CHERRY JOHNSON SIEGMUND JAMES, PLLC, Dallas, Texas, for Appellant. Matthew James Mezger, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia, for Appellee. ON BRIEF: Travis L. Richins, CHERRY JOHNSON SIEGMUND JAMES, PLLC, Waco, Texas, for Appellant. Jessica D. Aber, United States Attorney, Carolyn M. Wesnousky, Assistant United States Attorney, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia, for Appellee. USCA4 Appeal: 24-1706 Doc: 35 Filed: 05/05/2026 Pg: 2 of 15 NIEMEYER, Circuit Judge: Josh Malone, a volunteer with US Inventor, a nonprofit organization dedicated to promoting innovation in the United States, filed a Freedom of Information Act (FOIA) request with the Patent and Trademark Office (PTO) seeking documents relating to a particular adversary proceeding before a three-judge panel of the Patent Trial and Appeal Board (PTAB or “Board”). Malone requested documents relating to the panel of administrative patent judges assigned to hear the matter, the changes to the makeup of the panel during the course of the proceeding, and the drafts of the written decision that the panel ultimately issued. After Malone commenced this action under FOIA, the PTO provided roughly 1,500 pages of documents in response to Malone’s request. But it did not provide the drafts of the panel’s decision, which had been circulated to nonpanel judges, nor did it provide communications relating to the circulation of those drafts to nonpanel judges, relying on Exemption 5 in FOIA. Exemption 5 authorizes the PTO to withhold from disclosure documents that are both predecisional and deliberative. See 5 U.S.C. § 552(b)(5); Solers v. IRS, 827 F.3d 323, 328–29 (4th Cir. 2016). Malone contended that Exemption 5 did not support withholding the undisclosed documents. He argued that the documents were not deliberative because, having been shared with nonpanel members before the panel issued its final decision, they were ex parte. He claimed that such ex parte circulation violated “the [Administrative Procedure Act], due process, and the USPTO’s regulations against ex parte communications,” 2 USCA4 Appeal: 24-1706 Doc: 35 Filed: 05/05/2026 Pg: 3 of 15 amounting to “government misconduct,” and therefore the documents were not protected by Exemption 5. On cross-motions for summary judgment, the district court concluded that the documents were properly withheld under Exemption 5 and were not ex parte communications and that there was no “government misconduct defense” under Exemption 5 that would require their disclosure. Accordingly, it granted summa